The Toronto-Dominion Bank v. Colette Bourgerie
Claim Number: FA1605001673066
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Colette Bourgerie (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdtrustcanadasecure.net>, registered with 1&1 Internet SE.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2016; the Forum received payment on May 3, 2016.
On May 4, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <tdtrustcanadasecure.net> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tdtrustcanadasecure.net. Also on May 4, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the TD and CANADA TRUST marks through its registrations with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA396087, registered Mar. 20, 1992; Reg. No. TMA447666, registered Sept. 15, 1995). Respondent’s <tdtrustcanadasecure.net> domain name is confusingly similar to the marks because it is composed of the TD mark, the transposed words of the CANADA TRUST mark, the generic term “secure” and the generic top-level domain (“gTLD”) “.net.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <tdtrustcanadasecure.net> domain name as it is not affiliated with Complainant or otherwise permitted to use the TD or CANADA TRUST marks and because the available WHOIS information lists “Colette Bourgerie” as registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is an inactive page.
Policy ¶ 4(a)(iii)
Respondent uses the <tdtrustcanadasecure.net> domain name in bad faith because the resolving website is an inactive page. Respondent knew, or should have known, of Complainant’s rights in the TD and CANADA TRUST marks at the time that it registered the <tdtrustcanadasecure.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company that is the second largest bank in Canada.
2. Complainant has trademark rights in the TD and CANADA TRUST marks through its registration of the marks with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA396087, registered Mar. 20, 1992; Reg. No. TMA447666, registered Sept. 15, 1995).
3. Respondent registered the <tdtrustcanadasecure.net> domain name on December 21, 2015.
4. The disputed domain name does not resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the TD and CANADA TRUST marks through its registrations with the CIPO (Reg. No. TMA396087, registered Mar. 20, 1992; Reg. No. TMA447666, registered Sept. 15, 1995). Complainant has provided evidence of these registrations in Exhibit A. Complainant urges that it is not required to show that its marks are registered in the country in which Respondent is located. As the Panel agrees, it finds that Complainant has rights in the TD and CANADA TRUST marks. See State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies c/o Vistaprint North American Services Corp., FA 1617798 (Forum June 3, 2015) (concluding that “Complainant’s valid registration of the STATEFARM.COM mark with the CIPO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
The second issue that arises is whether the disputed <tdtrustcanadasecure.net> domain name is identical or confusingly similar to Complainant’s TD and CANADA TRUST marks. Complainant submits that Respondent’s domain name is confusingly similar to the TD and CANADA TRUST marks because it is composed of the TD mark, the transposed words of the CANADA TRUST mark, the generic term “secure” and the gTLD “.net.” Past panels have agreed that none of these changes, on their own, are enough to differentiate a domain name and mark under Policy ¶ 4(a)(i). See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i).); see also Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). As the Panel finds the combination of change in the present case similarly insufficient, it finds that the <tdtrustcanadasecure.net> domain name is confusingly similar to the TD and CANADA TRUST marks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TD and CANADA TRUST marks and to use them in its domain name and has added the generic word “secure”” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on December 21, 2015;
(c) The domain name does not resolves to an active website;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the <tdtrustcanadasecure.net> domain name as it is not affiliated with Complainant or otherwise permitted to use the TD or CANADA TRUST marks and because the available WHOIS information lists “Colette Bourgerie” as Registrant. As such, the Panel finds that Respondent is not commonly known by the <tdtrustcanadasecure.net> domain name according to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark);
(f) Complainant contends that Respondent fails to use the <tdtrustcanadasecure.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is an inactive page. Complainant has provided a screenshot of the website, in Exhibit F, to demonstrate this use. As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <tdtrustcanadasecure.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant does not make any arguments regarding Respondent’s bad faith use or registration of the <tdtrustcanadasecure.net> domain name which fall under the specifically enumerated sections of Policy ¶ 4(b). The Panel notes, however, that the Policy is merely illustrative, rather than an exclusive list. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant submits that Respondent uses the <tdtrustcanadasecure.net> domain name in bad faith because the resolving website is an inactive page. Complainant has provided a screenshot of the website, in Exhibit F, to demonstrate this use. As the Panel finds this evidence sufficient, it finds that Respondent uses the domain in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Thirdly, Complainant maintains that Respondent knew, or should have known, of Complainant’s rights in the TD and CANADA TRUST marks at the time that it registered the <tdtrustcanadasecure.net> domain name. To demonstrate Respondent’s actual or constructive knowledge, Complainant refers to its registration of the marks, and its use of the mark. Complainant has provided evidence of use and fame of the mark, in Exhibits B, C, and D, each displaying business rankings involving Complainant, as well as Exhibit H, containing information from Internet search engines. As the Panel finds this evidence sufficient to show that Respondent had actual, rather than merely constructive, knowledge, it finds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <tdtrustcanadasecure.net>, domain name using the TD and CANADA TRUST marks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdtrustcanadasecure.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 27, 2016
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